15 U.S.C. § 1065 — Incontestability of right to use mark under certain conditions
submitted 80 years ago by ch. 540 to r/title-15-COMMERCE-AND-TRADE · 403 words · no verdicts yet
After five continuous years of qualifying use, a registered mark’s right to use it in commerce becomes incontestable if the required conditions and affidavit are met. Certain cancellation grounds, prior State or territorial rights, and generic marks remain exceptions.
Except for cancellation grounds that may be raised at any time under paragraphs (3), (5), and (6) of section 1064, and except for any valid prior State or territorial right based on continuing use of a mark or trade name, the owner’s right to use a principal-register mark in commerce for goods or services on which it has been continuously used for five consecutive years after registration, and is still used in commerce, becomes incontestable. This applies only if: (1) no final decision went against the owner’s ownership or right to register or keep the mark registered; (2) no related proceeding is pending and unresolved in the Patent and Trademark Office or a court; (3) within one year after the five-year period ends, the owner files with the Director an affidavit identifying the goods or services on which the mark was continuously used and is still used, and stating the matters in (1) and (2); and (4) the mark is not generic for the goods or services, or part of them, for which it is registered.
The same incontestable right applies to a mark registered under either older Act when the required affidavit is filed within one year after any five-year period following publication under section 1062(c). The Director must notify a registrant that files the affidavit.
Except on a ground for which application to cancel may be filed at any time under paragraphs (3), (5), and (6) of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark*, the right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable: Provided, That—
there has been no final decision adverse to the owner’s claim of ownership of such mark for such goods or services, or to the owner’s right to register the same or to keep the same on the register; and
there is no proceeding involving said rights pending in the United States Patent and Trademark Office or in a court and not finally disposed of; and
an affidavit is filed with the Director within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and other matters specified in paragraphs (1) and (2) hereof; and
no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.
Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this chapter shall apply to a mark registered under the Act of March 3, 1881*, or the Act of February 20, 1905*, upon the filing of the required affidavit with the Director within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 1062 of this title.
The Director shall notify any registrant who files the above-prescribed affidavit of the filing thereof.
Source credit: (July 5, 1946, ch. 540, title I, § 15, 60 Stat. 433; Pub. L. 87–772, § 10, Oct. 9, 1962, 76 Stat. 771; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–247, § 10, Aug. 27, 1982, 96 Stat. 320; Pub. L. 100–667, title I, § 116, Nov. 16, 1988, 102 Stat. 3941; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583; Pub. L. 111–146, § 3(b), Mar. 17, 2010, 124 Stat. 67; Pub. L. 116–260, div. Q, title II, § 225(e)(1), Dec. 27, 2020, 134 Stat. 2207.)
- 1946Enacted · Act of July 5, 1946, ch. 540 · 60 Stat. 433
- 1962Amended · Pub. L. 87-772 · 76 Stat. 771
- 1975Amended · Pub. L. 93-596 · 88 Stat. 1949
- 1982Amended · Pub. L. 97-247 · 96 Stat. 320
- 1988Amended · Pub. L. 100-667 · 102 Stat. 3941
- 1999Amended · Pub. L. 106-113 · 113 Stat. 1536, 1501
- 2010Amended · Pub. L. 111-146 · 124 Stat. 67
- 2020Amended · Pub. L. 116-260 · 134 Stat. 2207
A history note hasn’t been published yet. The record shows enactment by ch. 540 on 1946-07-05.
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